Significant changes brought about by the Indian Patent Amendment Rules, 2018

The following are the significant changes which were brought about by the Patent (Amendment) Rules, 2018 and subsequently published in the Official Gazette. It came into force on December 4, 2018.

Procedure for Filing International Applications

Expedited Examination of Patent Application

Proviso included during the case of non-compliance of requirements under expedited examination [Rule 24C(4)]:

Constitution of Controller under Rule 55 for Opposition

No transmittal fee payable

No fee payable if the preparation of certified copy is through WIPO DAS

The inclusion of applicants under Form 18A

Procedure for Filing International Applications:

The filing of all the documents by the Patent Agents shall be made only by the mode of electronic transmission which has to be duly authenticated.

The time period for the submission of these documents is no more than fifteen days, after which it is deemed as not filed.

Expedited Examination of Applications:

Applicants for an Expedited Examination of Applications shall also include:

A small entity as defined in rule 2(fa) of the principle Act.

Female applicant(s) or if at least one of the applications is a female, provided it is a case of natural persons.

A Government Undertaking:

Indian Applicant: If in accordance with clause (h) of sub-section (1) of section 2 of the Act.

Foreign Applicant: If it is a similar entity.

An applicant who will be eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office. The patents filed under this category will be in accordance with the relevant provisions of the Act.

Proviso included in the case of non-compliance of requirements under expedited examination of applications [Rule 24C(4)]:

The proviso states that if the requirements are met before the issuance of FER, the application shall be processed for expedited examination in accordance with the provisions of rule 24-C.

Constitution of Controller under Rule 55 for Opposition:

Sub-rule 2A has been inserted under Rule 55 which states that the Controller shall, by order, constitute a bench comprising two members, who will take decisions in a joint manner. However, if the members of the bench differ in opinion on any issue, the Controller shall nominate a third member to the bench and subsequently the majority decision will be treated as final.

No transmittal fee payable:

48A states that no transmittal fee is applicable if the filing is done electronically.

No fee payable if the preparation of certified copy is through WIPO DAS:

49A states that there is no fee applicable if the preparation of a certified copy of priority document and e-transmission through WIPO DAS.

The inclusion of applicants under Form 18A:

Paragraph 3 of Form 18A shall also include options as to whether the applicant is:

A small entity.

A Government undertaking.

A female or at least one of them is a female provided it is a case of natural persons.

Eligible under an arrangement for processing an international application pursuant to an agreement between the Indian Patent Office with another participating patent office.

It is pertinent to note that in a country like India, where the corporate world is still patriarchal, steps are taken to encourage women inventors to shine in the field of science & technology.

This article has been authored by Pooja Veerabahu, pursuing law at the School of Law, Sastra University.

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